Appeal No. 1997-4457
Application 08/250,617
substituting the alloy plated metal required by this reference with galvanized wire, where the only
disclosure of trimercaptotriazine is shown by Nakamura and Saitoh, the examiner’s position is that the
applied prior art discloses that trimercaptotriazine and cobalt containing materials provide increased
adhesion to metals which includes zinc coated steel and thus one of ordinary skill in this art would have
combined these ingredients to arrive at the claimed method. We cannot agree with the examiner that the
mere citations of references which collectively disclose each of the specified ingredients in a rubber
composition used with some type of metal substrate, with one of the ingredients shown to be used with
zinc plated steel, thus providing each of the limitations of the claimed method, is all that is required to
establish a prima facie case of obviousness. Indeed, there must be some objective teaching, suggestion
or motivation to combine the teachings of the references other than knowledge of appellants’ invention.
See Warner, 379 F.2d at 1016, 154 USPQ at 177 (“Thus, where the invention sought to be patented
resides in a combination of old elements, the proper inquiry is whether bringing them together was
obvious and not, whether one of ordinary skill having the invention before him, would find it obvious
through hindsight to construct the invention from elements of the prior art.”).
The difficulty we have with the examiner’s position(s) is that there is no explanation on this
record why one of ordinary skill in this art would have combined the rubber compositions of these
references, each of which uses either cobalt containing material, that can be an inorganic or organic
cobalt salt, or trimercaptotriazine with specific additional ingredients in order to treat specific metal
substrates. We are of the opinion that the only related rubber compositions of the applied prior art are
those of Muraoka and Nakamura which contain sulfur containing compounds, and one of ordinary skill
in the art would have combined these compositions in view of the rubber compositions of Saitoh which
contain sulfur-donating compounds, as common metal substrates are involved as we explained above,
which, of course, does not result in the claimed method. Indeed, the only similarity between the rubber
composition of Muraoka and Davis ‘838 is the cobalt salt of an organic acid, which relationship does
not exist with Davis ‘770 wherein the rubber composition contains an inorganic salt of cobalt, and there
is no similarity between the rubber compositions of the Davis references and those of either Muraoka,
Nakamura or Saitoh with respect to the ingredients specified to be used with the cobalt containing
material and with trimercaptotriazine in connection with the respective specified metal substrates.
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